A one member UDRP panel has awarded a domain name purchased in 2010, TheLightBlubStore.com, to Lumen Inc. based off a trademark filed in 2011, after the owner wanted to “reselling it for an outrageous profit. Specifically, Respondent offered to sell the disputed domain name for $18,000.00.”
Hon. Carolyn Marks Johnson was the Panelist who found the Complainant had a common law trademark right even though the Complainant did not make that argument or even a statement that they had a common law trademark right.
Complainant owns THE LIGHTBULB STORE mark through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,189,954, registered August 14, 2012, filed Dec. 15, 2011).
“While Complainant failed to make assertions regarding accrual of common law rights or the commercial success of its business under the THE LIGHTBULB STORE mark, the Panel notes that Complainant’s USPTO registration lists a first use in commerce date of January 15, 2009, relevant in light of Respondent’s domain name registration in September 2010.
Instead of finding that the domain holders ownership for which predated the registered trademark the panel used the “passive holding period” against the domain owner.
The panel acknowledged the domain name was first registered 12 years ago but acquired by this domain holder in 2010, the panel found that because during the whole 12 year period the domain was “passively held” that “Respondent’s inactive use or passive holding of the disputed domain name is demonstrative of Respondent’s lack or rights or legitimate interests in the disputed domain name.”
“Complainant next argues that Respondent has no right to the disputed domain name as it was registered over 12 years ago and has never been used for a website, or to conduct business relating to light bulbs. The Panel notes that Complainant failed to provide evidence, such as screenshots, to corroborate this allegation; however, Respondent produced no evidence in the Response to counter the claim of passive holding and the Panel finds that in such circumstances Complainant’s allegation may be taken as true. The Panel finds Respondent’s inactive use or passive holding of the disputed domain name is demonstrative of Respondent’s lack or rights or legitimate interests in the disputed domain name
The Panelist found that the Complainant, had common law rights, even though “Complainant failed to make assertions regarding accrual of common law rights or the commercial success of its business under the THE LIGHTBULB STORE mark”
“The Panel notes that Complainant’s USPTO registration lists a first use in commerce date of January 15, 2009, relevant in light of Respondent’s domain name registration in September 2010.
The Panel considers such self-reported evidence at the time of the application in a federal publicly-filed document sufficient to show both date of first use and the beginning date for continuous use and accretion of adequate secondary meaning in Complainant’s mark, absent proof to the contrary; and thus Complainant’s submission shows sufficient proof to support a finding of common law rights in the THE LIGHTBULB STORE mark, dating back as far as January 15, 2009, Complainant’s first use, because it permits the presumption of continuous use from that date.”
While Respondent contends that the thelightbulbstore.com, domain name is comprised of common and generic or descriptive terms and as such cannot be found to be identical or confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. S
Respondent also contends that the disputed domain name is comprised of common and generic/descriptive terms and thus cannot be deemed to be either identical or confusingly similar to Complainant’s mark.
Further, Respondent also contends that its disputed domain name was registered before Complainant’s alleged rights in the mark. However, because this argument as well is not applicable under Policy ¶ 4(a)(i) per se, the argument will be considered under Policy ¶ 4(a)(iii).
The Panel finds that Complainant established rights in the mark contained in its entirety within the dispute domain name that Respondent purchased. The Panel finds that this domain name is identical to this protected mark; Complainant satisfied the elements of ICANN Policy Policy ¶ 4(a)(i).
Complainant next argues that Respondent has no right to the disputed domain name as it was registered over 12 years ago and has never been used for a website, or to conduct business relating to light bulbs.
The Panel notes that Complainant failed to provide evidence, such as screenshots, to corroborate this allegation; however, Respondent produced no evidence in the Response to counter the claim of passive holding and the Panel finds that in such circumstances Complainant’s allegation may be taken as true.
The Panel finds Respondent’s inactive use or passive holding of the disputed domain name is demonstrative of Respondent’s lack or rights or legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).
Complainant also claims that a finding of Respondent’s lack of rights is further supported by Respondent ‘s efforts to sell the disputed domain name to Complainant for an amount far in excess of any costs of registration or plan of use. To support this allegation Complainant submits a copy of e-mail correspondence between alleged agents of the parties, purporting to show Respondent’s willingness to sell the disputed domain name for the amount of $18,000.00. See Compl., at Attached Ex. III. Prior panels have held that a respondent’s willingness to sell a disputed domain name to the complainant for inflated costs suggests the respondent is without rights or legitimate interests in the name. See, e.g., George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).
In this case, the Panel finds that the referenced e-mail correspondence to and from this particular Respondent and this particular Complainant about this particular domain name, supports findings that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).
Respondent purchased the domain name and it is established contract law that Respondent acquired only such rights as those held by the predecessor and such liability unless that was expressly contracted away.
Respondent offers no proof of rights, transfer of rights, ownership, or disposition of liabilities. Respondent also defeats its argument in support of rights by its own argument that the alleged mark THE LIGHTBULB STORE is generic in nature. Respondent notes that a business operates in Scottsdale, Arizona, under the same name.
Respondent explains that it purchased several domain names comprised of generic terms, including <theexitsignstore.com>, and <thebatterymart.com> and did so in connection with a plan to develop these names for use in connection with Respondent’s electrical distribution business.
If all are generic, who has any rights to them?
The record is silent as to Respondent’s business or business plan or the cost of development to date in that effort.
Exhibit D does not show such a plan, proposal, projection, cost analysis or any other proof to support the development cost of any such enterprise, especially not to the amount of $18,000.00.
It consists of a page showing three or domain names held by Respondent without further information about why they are there or what is proposed. Respondent passively holds this domain name and the Panel presumes it is held to keep Complainant from using its own mark as fully as the Internet plan for such domain names allows a rightful owner.
The Panel finds Respondent has shown no rights to the thelightbulbstore.com domain name either by being commonly known by it or by bona fide use.
The Panel notes that Respondent claims to have purchased the disputed domain name in good faith September 27, 2010, with no intention of targeting Complainant.
The Panel notes that it is established contract law that Respondent contracted not only for rights held by the predecessor; but also acquired liabilities, unless they were exclusively handled otherwise.
Respondent has shown no exception to this established rule.
Although Respondent’s purchase date of September 27, 2010, predates Complainant’s earliest demonstrated legal rights in the THE LIGHTBULB STORE mark, namely the December 15, 2011, filing date with the USPTO, the Panel found that Complainant’s rights in the mark dated back to the date represented to the federal government in the filing process as 2009, a date that is earlier in time than Respondent’s purchase of the disputed domain name and that therefore a finding of bad faith is not precluded.
“Exhibit D does not show such a plan, proposal, projection, cost analysis or any other proof to support the development cost of any such enterprise, especially not to the amount of $18,000.00.”
This reminds me in a way of how communism used to rule.
No individual had any right to do something privately, everyone was controlled by a higher authority which ruled their lives, in fact that authority decided who was the property holder per will and not per specific rules or laws.
Do they even own the applicable TM?
NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “THE LIGHTBULB STORE” APART FROM THE MARK AS SHOWN
There are literally hundreds of stores claiming to be “the lightbulb store”.
This is based on limited research. i would be shocked if there was a standard character mark for the lightbulb store. That’s pretty err… well.. errr…. smacks head.
So now we have the Panelist making the Case fir the Complainant to the detriment of the Respondent. God knows what the UDRP will like in 5 years the way it is going now.
So if you can only sell something for what you have spent on it no-one could ever make a profit.
Normally I would side with the complainant in cases of a legitimate operation backed up with a trademark against a domain owner that never developed the domain, but only if the existence of a trademark “paralyzes” the domain from ever being used.
Hypothetically speaking, if they have rights to “The Lightbulb Store” for selling lightbulbs, it makes it impossible to develop thelightbulbstore.com and it should be taken away regardless of the registration date. Most domain holders don’t like to admit this, but domain ownership alone does not secure our indefinite rights to sit on a domain and maybe develop it someday. Use it, or in some cases, risk losing it. Granted, in this case there is some question as to whether or not complainant has exclusive rights to “The Lightbulb Store”.
On a haunch I checked TheLightbulbStore.net and complainant is currently operating there. Have a look and get ready to be creeped out. First a ridiculous flash animation, then a page with nothing but broken images and finally the wire framework for a store.
I would say had the domainer at least hooked up an Amazon storefront he probably would have been victorious.
Notwithstanding the language of the decision, which precludes owning an unused brandable or generic domain name purely for investment purposes, which is disturbing, it is the right decision, and I don’t know how you, MHB, can conclude otherwise. Someone owned the twitter handle, thedomains, before you acquired your account, and twitter just GAVE it to you. You don’t even own the trademark on, thedomains, from what a search on USTPO yields – correct me if I am wrong. Good show, getting @thedomains twitter handle. It contributes alot to the branding of theDomains. It would have been a huge annoyance, if you didn’t use, @thedomains for your thedomains tweets.
I am agnostic about the decision. Maybe I see it the respondent’s way. John Berryhill defends owners all day long, defending parking revenue as legitimate, and not bad faith, and that selling is not bad faith, either:
” since it has legitimately acquired and used the Disputed Domain Name, it would be entitled to sell it at any price it may desire.”
according to one response.
The lesson is, you have to be aggressive in asserting that monetizing a domain or offering to sell, is not bad faith.
t is the wrong decision, and I don’t know how you, Louise, can conclude otherwise
Please review the service mark that has been issued. It is not for THE LIGHTBULB STORE as the complainant claims. The Service mark is for THE L GHTBULB STORE.
That’s right they claimed ownership of a mark that they don’t actually have rights to.
That’s item 1 of the 3 part test last time I checked.
.
They even state in the disclaimer that:
“NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “THE LIGHTBULB STORE” APART FROM THE MARK AS SHOWN”
The mark as shown has a LIGHTBULB image. This disclaimer is because that particular phrase is not likely trademarkable. For example…. I could brand as “Ye Olde English Ice Cream Shoppe”. I would disclaim “Ice Cream” because other wise I would own icecream.com and in fact could sue most ice cream parlors in America. Would have been much better if they had just registered “L ghtbulb” as a Trade Mark. Just imaging, they could have sued GE for infringement on something most of us have in our homes, cars, and everywhere.
Until such time that domain names incorporate little shiny graphics, I’m not sure exactly what is confusign about an “i” and a lightbulb.jpg
But maybe I’m the only one who actually checks the TM registered. Pretty sure the panelist didn’t – but then, these great lawyers probably expected their free paralegal intern to do the work for them.
Please note that the spaces above originally had the word IMAGE or Lightbulb.jpg in angled parenthesis but the clevel text filter remove that text.
The mark is for:
The L “Insert lightbulb image here” ghtbulb Store
I SAID I see it the respondent’s way.
That post was not there when I responded – perhaps I didn’t refresh my browser after coming here (perhaps an auto refresh would be good to avoid this). Only the first post was read where you stated it was the right decision and you couldn’t understand how MHB could conclude otherwise.
No worries. We can all change our minds.
I wold have no idea how to look this up, but perhaps he was originally denied a TM for “the lightbulb store” and resubmitted with the bulb in place of the i. Pure speculation on my part of course.
It is a grossly unfair decision and indicative of the way the UDRP has been twisted and perverted in such a way as to take away any legitimacy . What is going to happen is it simply is going to drive more people to Court to defend their legitimately owned domain names.